23-05-2012, 03:51 PM
Patenting Nanotechnology
Patenting Nanotechnology.pdf (Size: 986.75 KB / Downloads: 87)
INTRODUCTION
In 1959, Richard Feynman presented his famous talk “There’s Plenty of
Room at the Bottom” to the American Physical Society at California Institute
of Technology and foretold, if not initiated, the field of nanotechnology.
Now, fifty years later, nanotechnology is a multidisciplinary subject area
that encompasses physics, chemistry, engineering, materials science,
electronics, textiles, biotechnology, and pharmaceuticals. Indeed,
nanotechnology has contributed to innovations that continue to
impact our lives. Extending battery life (http://www.a123systems),
making fabrics more stain repellant, soil resistant, and wash durable for
apparel uses (http://www.nano-tex), and delivering biologics via
plant virus nano-particles to specific cells in the human body (http://
www.nanowerknews/ newsid=8462.php), are just a few of the
innovations that have developed recently.
OVERVIEW OF THE UNITED STATES PATENT SYSTEM
A. Policy Rationales
The patent system in the United States is based on the premise that providing an exclusive right to an invention provides an
incentive for artisans to engage in creative pursuits. As author Ben Ikenson stated, “A patent protects a person’s idea so that
he might rightly profit from it, thereby encouraging innovation as a means to prosperity.” Ben Ikenson, Patents: ingenious
inventions—how they work and how they came to be 8 (Black Dog & Leventhal Publishers 2004).
Patents are effectively agreements between the inventor and the public; the inventor retains a property right over his or her
work for some limited amount of time in exchange for timely public disclosure. A patent provides a limited, temporary
monopoly for the inventor to prevent others from making, using, or selling an invention. In return for this monopoly, the
public gains knowledge of how to make and use the invention. At the end of the patent term, the invention becomes public
and anyone may practice the invention. This quid pro quo system strives to prevent unnecessary duplication of inventions
and promotes the beneficial exchange of products, services, and technological information within and across national
boundaries.
There are other forms of intellectual property, such as copyrights, trade secrets, trademarks, and sui generis mask works
that may also be applicable to some nanotech developments, but these are not the focus of this article.
Three general types of patents exist, including utility, plant, and design patents. Design patents protect the ornamental
design of an object of manufacture, whereas plant patents protect distinct and new varieties of plants. Utility patents are
granted to inventors of any new and useful process, machine, article of manufacture, or compositions of matters, or any
new useful improvements thereof and are the primary focus of this article.
Sources of Patent Law
For an invention to be patentable, it must comply with the requirements of the U.S. patent laws. The source of these laws
is the United States Constitution, which authorizes Congress to award exclusive rights to authors and inventors for their
writings and discoveries. U.S. Constitution, Article I, § 8, cl. 8. The patent laws are codified in Title 35 of the United States
Code and the corresponding rules are organized in Title 37 of the Code of Federal Regulations. 35 U.S.C. §§ 101 et seq.
and 37 C.F.R. §§ 1.1 et seq. Section 101 of the Patent Laws provides the statutory framework for the patent system in the
United States. This body of law sets forth, among other things, the requirements of patentability, the process for obtaining
a patent, and the standards that courts apply when a patent owner seeks to enforce their patent. Another important source
of information on patents and the examination process is the USPTO Manual of Patent Examining Procedure, known
officially as the “MPEP,” which interprets the patent laws and rules and informs patent office examiners how to examine
applications, issue patents, and conduct other administrative matters. U.S. Patent and Trademark Office Manual of Patent
Examining Procedure, 8th ed., Revision 7 (2008) (“MPEP”).
PATENTABILITY ISSUES FOR NANOTECHNOLOGY INVENTIONS
A. Patent Office Issues
The emerging field of nanotechnology differs from many of the classical art areas in the patent office because nanotechnology
encompasses many different disciplines. Nevertheless, the pace of nanotech patenting has been dramatic over the past
several decades. Thus, it is difficult to search for prior art references because they may be located in various topical areas.
Further, patent applications may be examined by different art units and may be issued with overlapping claims. The
USPTO has responded to these issues by creating a new nanotechnology class, 977. This class contains 263 subclasses
and allows organization of most nanotechnology subject matter in a logical manner. Blaise Mouttet, Nanotech and the U.S.
Patent & Trademark Office: The Birth of a Patent Class, 2 Nanotechnology Law & Business 260 (2005); cf. European Patent
Office Tags Y01N2, N4, N6, N8, N10 and N1; see generally Kallinger et al., Patenting Nanotechnology: A European Patent
Office Perspective, 5 Nanotechnology Law & Business 95 (2008). The new USPTO class is not designed around a topic
or technology because nanotech is multiple disciplinary art and prior art is scattered throughout the patent classification
system. Technology class 977 is a cross-referenced classification. Patents are first referenced in an area related to specific
technology, and then a secondary nanotech classification is also assigned to provide a supplemental search resource.
CONCLUSION
In many perspectives, patenting a nanotechnology invention is no different than patenting an invention from other fields.
Commercial research and development has always been conducted in the context of boundaries, e.g., needs, cost constraints,
etc. Managing risk in research development is a constraint scientists have addressed long before nanotechnology was a
recognized discipline.
Nevertheless, barriers to patentability do exist for developers of nanotechnology, and inventors and patent drafters will have
to remain alert to issues of enablement and non-obviousness, while the existing thicket of prior art patents are cut down or
circumnavigated. At the same time, issues will be compounded by the backlog of applications and the shortage of examiners
with training in nanotechnology. Perseverance, tenacity and dedication will be required to obtain the rewards of innovation
and to further incentivize inventors to obtain the just reward for their efforts.
Patenting Nanotechnology.pdf (Size: 986.75 KB / Downloads: 87)
INTRODUCTION
In 1959, Richard Feynman presented his famous talk “There’s Plenty of
Room at the Bottom” to the American Physical Society at California Institute
of Technology and foretold, if not initiated, the field of nanotechnology.
Now, fifty years later, nanotechnology is a multidisciplinary subject area
that encompasses physics, chemistry, engineering, materials science,
electronics, textiles, biotechnology, and pharmaceuticals. Indeed,
nanotechnology has contributed to innovations that continue to
impact our lives. Extending battery life (http://www.a123systems),
making fabrics more stain repellant, soil resistant, and wash durable for
apparel uses (http://www.nano-tex), and delivering biologics via
plant virus nano-particles to specific cells in the human body (http://
www.nanowerknews/ newsid=8462.php), are just a few of the
innovations that have developed recently.
OVERVIEW OF THE UNITED STATES PATENT SYSTEM
A. Policy Rationales
The patent system in the United States is based on the premise that providing an exclusive right to an invention provides an
incentive for artisans to engage in creative pursuits. As author Ben Ikenson stated, “A patent protects a person’s idea so that
he might rightly profit from it, thereby encouraging innovation as a means to prosperity.” Ben Ikenson, Patents: ingenious
inventions—how they work and how they came to be 8 (Black Dog & Leventhal Publishers 2004).
Patents are effectively agreements between the inventor and the public; the inventor retains a property right over his or her
work for some limited amount of time in exchange for timely public disclosure. A patent provides a limited, temporary
monopoly for the inventor to prevent others from making, using, or selling an invention. In return for this monopoly, the
public gains knowledge of how to make and use the invention. At the end of the patent term, the invention becomes public
and anyone may practice the invention. This quid pro quo system strives to prevent unnecessary duplication of inventions
and promotes the beneficial exchange of products, services, and technological information within and across national
boundaries.
There are other forms of intellectual property, such as copyrights, trade secrets, trademarks, and sui generis mask works
that may also be applicable to some nanotech developments, but these are not the focus of this article.
Three general types of patents exist, including utility, plant, and design patents. Design patents protect the ornamental
design of an object of manufacture, whereas plant patents protect distinct and new varieties of plants. Utility patents are
granted to inventors of any new and useful process, machine, article of manufacture, or compositions of matters, or any
new useful improvements thereof and are the primary focus of this article.
Sources of Patent Law
For an invention to be patentable, it must comply with the requirements of the U.S. patent laws. The source of these laws
is the United States Constitution, which authorizes Congress to award exclusive rights to authors and inventors for their
writings and discoveries. U.S. Constitution, Article I, § 8, cl. 8. The patent laws are codified in Title 35 of the United States
Code and the corresponding rules are organized in Title 37 of the Code of Federal Regulations. 35 U.S.C. §§ 101 et seq.
and 37 C.F.R. §§ 1.1 et seq. Section 101 of the Patent Laws provides the statutory framework for the patent system in the
United States. This body of law sets forth, among other things, the requirements of patentability, the process for obtaining
a patent, and the standards that courts apply when a patent owner seeks to enforce their patent. Another important source
of information on patents and the examination process is the USPTO Manual of Patent Examining Procedure, known
officially as the “MPEP,” which interprets the patent laws and rules and informs patent office examiners how to examine
applications, issue patents, and conduct other administrative matters. U.S. Patent and Trademark Office Manual of Patent
Examining Procedure, 8th ed., Revision 7 (2008) (“MPEP”).
PATENTABILITY ISSUES FOR NANOTECHNOLOGY INVENTIONS
A. Patent Office Issues
The emerging field of nanotechnology differs from many of the classical art areas in the patent office because nanotechnology
encompasses many different disciplines. Nevertheless, the pace of nanotech patenting has been dramatic over the past
several decades. Thus, it is difficult to search for prior art references because they may be located in various topical areas.
Further, patent applications may be examined by different art units and may be issued with overlapping claims. The
USPTO has responded to these issues by creating a new nanotechnology class, 977. This class contains 263 subclasses
and allows organization of most nanotechnology subject matter in a logical manner. Blaise Mouttet, Nanotech and the U.S.
Patent & Trademark Office: The Birth of a Patent Class, 2 Nanotechnology Law & Business 260 (2005); cf. European Patent
Office Tags Y01N2, N4, N6, N8, N10 and N1; see generally Kallinger et al., Patenting Nanotechnology: A European Patent
Office Perspective, 5 Nanotechnology Law & Business 95 (2008). The new USPTO class is not designed around a topic
or technology because nanotech is multiple disciplinary art and prior art is scattered throughout the patent classification
system. Technology class 977 is a cross-referenced classification. Patents are first referenced in an area related to specific
technology, and then a secondary nanotech classification is also assigned to provide a supplemental search resource.
CONCLUSION
In many perspectives, patenting a nanotechnology invention is no different than patenting an invention from other fields.
Commercial research and development has always been conducted in the context of boundaries, e.g., needs, cost constraints,
etc. Managing risk in research development is a constraint scientists have addressed long before nanotechnology was a
recognized discipline.
Nevertheless, barriers to patentability do exist for developers of nanotechnology, and inventors and patent drafters will have
to remain alert to issues of enablement and non-obviousness, while the existing thicket of prior art patents are cut down or
circumnavigated. At the same time, issues will be compounded by the backlog of applications and the shortage of examiners
with training in nanotechnology. Perseverance, tenacity and dedication will be required to obtain the rewards of innovation
and to further incentivize inventors to obtain the just reward for their efforts.